Trademark - Confusion and Infringement (Intellectual Property Law Series)

This casebook contains 172 federal court of appeals decisions that address the likelihood of confusion by consumers in trademark infringement cases. The selection of decisions spans from 2005 through the date of publication and is organized by federal circuit.

In order to prevail under §§ 32(1) and 43(a) of the Lanham Act for trademark infringement and unfair competition, respectively, a complainant must demonstrate that it has a valid, protectible trademark and that the defendant's use of a colorable imitation of the trademark is likely to cause confusion among consumers." Lone Star Steakhouse & Saloon, Inc. v. Max Shayne, Inc., 43 F.3d 922, 930 (4th Cir. 1995) (citing 15 U.S.C. § 1114(1)). Thus, "there is a distinction between the rights that flow from ownership," most notably the exclusive right to use the registered mark in commerce, "and the remedies — including an owner's right to enjoin another person's use of a mark — that ripen only when there is a likelihood of confusion." What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas, 357 F.3d 441, 447 n.4 (4th Cir. 2004) (internal citations omitted); see also 15 U.S.C. § 1057(b). While the Lanham Act does not contain a limitations provision, it provides that trademark infringement claims are subject to several enumerated defenses or defects, including the equitable doctrines of laches, estoppel, and acquiescence. See 15 U.S.C. § 1115(b)(9). Ray Communications, Inc. v. Clear Channel Communications, Inc., (4th Cir. 2012)